Appeal 2007-0700
Application 09/159,509
Patent 5,559,995
claim8 in all aspects, the recapture rule bars the claim; (2) if it is
narrower in all aspects, the recapture rule does not apply, but
other rejections are possible; (3) if the reissue claim is broader
in some aspects, but narrower in others, then: (a) if the reissue
claim is as broad as or broader in an aspect germane to a prior
art rejection, but narrower in another aspect completely
unrelated to the rejection, the recapture rule bars the claim; (b)
if the reissue claim is narrower in an aspect germane to prior art
rejection, and broader in an aspect unrelated to the rejection, the
recapture rule does not bar the claim, but other rejections are
possible. Mentor is an example of (3)(a); Ball is an example of
(3)(b).
In re Clement at 1470, 45 USPQ2d at 1165 (footnote added).
In Ex parte Eggert, 67 USPQ2d 1716 (Bd. Pat. App. & Int. 2003)
(precedential), an expanded panel of the Board determined that the reissue
claims had been narrowed in the same aspect (i.e., the shape of the retaining
member) in which they were broadened with regard to a patent claim. The
Board found that the applicant for reissue had presented claims that were
narrower than the surrendered subject matter in an aspect germane to the
prior art rejection and broader only in aspects unrelated to the rejection.
According to the Board, the recapture rule did not bar the claims because the
8 The “canceled or amended claim” is the claim that was canceled or
amended. “Once we determine that an applicant has surrendered the subject
matter of the canceled or amended claim, we then determine whether the
surrendered subject matter has crept into the reissue claim” (emphasis
added). In re Clement at 1469, 45 USPQ2d at 1164. In Clement, the Federal
Circuit compared the reissue claim with the corresponding application claim
as it stood before the amendments added during prosecution. See In re
Clement at 1470-71, 45 USPQ2d at 1165-66.
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